Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches

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HYATT v. HIRSHFELD

Before Reyna, Wallach, and Hughes. Appeal from the United States District Court for the District of Columbia.

Summary: The PTO met its burden to prove prosecution laches for bulk-filed patent applications claiming priority to applications more than six years old.

Gilbert Hyatt filed district-court lawsuits against the PTO under 35 U.S.C. § 145 to obtain patents on four rejected applications. Mr. Hyatt had filed those four patent applications during the months leading up to June 8, 1995, when the measure of patent term in the U.S. changed from the date of issuance to the date of application. During that time, Mr. Hyatt had bulk-filed a total of 381 applications. Each of the 381 applications originally had a small set of claims. Mr. Hyatt later filed amendments that increased the number of claims to about 300 per application.

The four applications at issue in the district-court lawsuit claim priority to applications filed in the 1970s and 1980s, which pre-date the applications by a range of 12 to 25 years. From 2003 to 2012, the PTO stayed the examination of many of Mr. Hyatt’s applications pending litigation. Around 2013, the PTO resumed examination of Mr. Hyatt’s applications and created an art unit dedicated to examining Mr. Hyatt’s applications. The examiners took approximately four to five months to write their first office actions, each of which spanned hundreds of pages. Over the course of five years, the PTO spent more than $10 million examining claims in Mr. Hyatt’s patent applications and Mr. Hyatt paid about $7 million in fees. Mr. Hyatt filed the district-court lawsuits to obtain patents on the four applications at issue after the Board of Patent Appeals and Interferences affirmed rejections of claims in those applications.

In the district-court lawsuit, the PTO asserted that prosecution laches bars issuance of patents from the four applications at issue. Prosecution laches requires proving (a) unreasonable and inexcusable delay under the totality of circumstances and (b) prejudice attributable to the delay. After conducting bench trials, the district court concluded that the PTO failed to carry its burden of proving prosecution laches and ordered the PTO to issue patents on claims of the four applications at issue. The PTO appealed.

The Federal Circuit found that the district court misapplied the legal standard for prosecution laches, reasoning that the district court failed to consider the totality of the circumstances and focused on the PTO’s conduct, while discounting Mr. Hyatt’s. The Court noted that the PTO’s conduct may be considered in the totality of circumstances, but its delay cannot excuse the applicant’s own delay in prosecution. The Court further held that the evidence and arguments that the PTO presented at trial were sufficient to shift the burden to Mr. Hyatt on the issue of prosecution laches. In this regard, the Federal Circuit noted that Mr. Hyatt’s delay exceeded six years and therefore raises a presumption of prejudice. The Court concluded that the PTO carried its burden of proving that Mr. Hyatt engaged in a “clear abuse” of the PTO’s patent examination system that contributed to delay in the four applications at issue. The Federal Circuit therefore vacated the district court’s decision on prosecution laches and remanded to provide Mr. Hyatt an opportunity to present evidence on that issue.

Editor: Paul Stewart

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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